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Overview of Indian trademark system

Picture of 弁理士 杉浦健文

We have organized the Indian trademark system, including an overview of the system, application, examination, registration, renewal, opposition, cancellation, and infringement response, as well as a comparison with the Japanese system and points to keep in mind in practice.

1. System overview (definition of trademark, subject of protection, legal basis)

India's trademark system operates under The Trade Marks Act, 1999 and its implementing regulations, the Trade Marks Rules, 2017. Trademark administration is under the jurisdiction of the Indian Intellectual Property Board (CGPDTM), which is responsible for trademark registration, protection, and prevention of unauthorized use. India is a member of the Paris Convention (joined in 1998) and the WTO/TRIPS Agreement, and also joined the Madrid Protocol (International Trademark Application System) in 2013.

Definition of a trademark and what it protects: Under the Indian Trademark Act, a "trademark" means "a mark that can be displayed graphically and distinguishes it from the goods or services of others." Specifically, combinations of characters, names, labels, figures, numbers, symbols, product shapes, packaging, color combinations, and similar marks can be registered as trademarks. Furthermore, India also protects service marks, and since the 1999 Act, trademark rights have been granted not only to goods but also to services. Recent reforms have made it possible to register sound trademarks as clear text, and theoretically it is understood that color-only trademarks, 3-dimensional trademarks, location marks, holograms, and scents and tastes can be protected as trademarks if they can be expressed graphically. India also has a Collective Trademark and Certification Trademark system, each of which allows organizations and certification bodies to register trademarks used by them.

2. Application procedures (applicant qualifications, required documents, classification, electronic application, etc.)

  • Applicant Eligibility and Competent Authority: In India, anyone who is using or intends to use their own trademark can apply for a trademark (both individuals and corporations). It is also possible to apply by a foreign resident, but in that case, you will need to appoint a representative (patent attorney, etc.) in India and file the application with the trademark registration office with jurisdiction depending on the location of the representative. The Indian Trademark Registry is located in five locations across the country: Mumbai, Delhi, Chennai, Kolkata, and Ahmedabad, and the office in charge is determined by the applicant's (or agent's) address.

  • Application language: The languages that can be used for application are English or Hindi. Application documents and forms are available in two languages, and foreign companies usually complete the process in English. If the trademark you are applying for contains characters in a language other than English or Hindi (e.g. Japanese), you will need to submit a translation or transliteration (romanization) in English.

  • Required documents/information: To apply for a trademark, submit the prescribed application form (Form TM-A, etc.). The application must include an accurate representation of the trademark (illustrations, text, etc.), the name and address of the applicant (in the case of a corporation, the name, address and corporate form), and the designated goods and services and their international classification (Nice Classification Class 45). Additionally, if you are claiming priority under the Paris Convention, you will also be required to submit a priority document(with English translation). India-specific requirements include declaration of usage within India. In other words, at the time of filing, it is necessary to clearly indicate whether the trademark has already been used in India or whether it will be used in the future, and if it is already in use, specify and declare the date of first use. If you are actually using the product, you will be required to attach an affidavit of usage history (Affidavit) and evidence (e.g. invoices or documents showing sales results) at the time of application. On the other hand, if you have not used it yet, file an application based on your intention to use it and declare that you plan to use it in the future. In addition to this, the application documents also require a power of attorney (if applying through an agent) and an image file attachment if the trademark is a figure.

  • International Classification and Classification: India has adopted the classification of goods and services according to the Nice Classification, with a total of 45 categories. It is possible to specify multiple classifications (classes) in one application (multi-class application). This is similar to Japan, but India also allows the registration of series trademarks (a system in which multiple similar trademarks are registered in one application). For example, similar trademarks with different colors or slightly different descriptions can be filed and registered together as a "series" (Japan does not have a series trademark system). The Indian Trademark Act also provides for Associated Trademarks (a system for managing similar trademarks by associating them with each other).

  • Filing Procedures and Electronic Filing: Trademark applications can be filed by online electronic filing or by paper submission. Currently, the Intellectual Property Office of India has aComprehensive Electronic Filing System in place, allowing applicants to fill out forms and submit them electronically over the web (online payments are also supported). With the spread of electronic filing, prompt and efficient procedures are recommended. Traditional paper-based applications are also accepted at each competent office, but there are measures to reduce government fees for online applications (e-filing incentive measures). Furthermore, as mentioned above, India is a member of the Madrid Protocol, so it is possible to designate India in an international trademark application (Madpro application) based on basic applications and registrations in other countries such as Japan. Applications filed via Madpro are examined in the same way as domestic applications in India, so they are no different from direct applications in that they go through substantive examination, public notice, and opposition procedures locally (details will be explained later).

3. Examination/registration process (formal examination/substantive examination, publication, registration)

Examination flow: After filing an application, aformality examination will be conducted first. In the formality examination, formal requirements are checked, such as whether there are any deficiencies in the application details and submitted documents, whether the prescribed fees have been paid, and whether the classification and description of designated goods and services are appropriate (e.g., conformity to the Nice classification). If there are no problems with the formality, we will proceed to the substantive examinationnext. The substantive examination examines whether the applied trademark satisfies theabsolute registration requirements andrelative registration requirements of the Indian Trademarks Act. The absolute requirements include that the trademark has distinctiveness (can be distinguished from the goods and services of others), is not an overly descriptive or customary name, and does not fall under any mark prohibited by law (for example, a mark that violates public order and morals or a mark whose use is prohibited such as a national flag or medal). Relative requirements include whether the trademark is identical or confusingly similar to an existing registered trademark of another person, and whether it is not confusing with another person's well-known trademark. These substantive examinations (searches) are conducted centrally in Mumbai, where the headquarters of the Indian Trademark Registry are located, and examiners perform checks against the prior trademark database.

Examination result and response: If it is determined that there are no problems with the registration requirements as a result of the examination, the trademark will be ``Accepted''. On the other hand, if there are reasons for refusal or conditions, the examiner will issue a First Examination Report and notify the applicant. If there are any indications in the report, the applicant usually has to respond by submitting a written opinion or amendment within one month (from the date of receipt of the notification) (it is possible to apply for an extension of the deadline if there is a valid reason). In the written opinion, we make counterarguments and amendments to the reasons for refusal (limiting product categories, clarifying parts of the trademark for which rights are not claimed, etc.). If the examiner still has concerns, you will be given an opportunityfor an interview with the examiner. Hearings are an opportunity to explain your arguments orally directly to the examiner, and are held remotely via video conferencing. If the examiner is finally satisfied, the application will be granted acceptance and proceed to the next publication procedure. On the other hand, if the application is refused at the examination stage, the applicant can file a lawsuit to revoke the trial decision at the High Court as a complaint (*In India, the trial system like Japan has been abolished, and as mentioned below, complaints at the examination stage are now a judicial remedy).

Publication: Once a trademark has been approved for registration, it is immediately published inTrade Marks Journal and made available to the public. The Indian Trademark Gazette is an electronic official gazette published weekly (usually every Monday) on the official website of the Intellectual Property Office of India. The official bulletin contains the trademark design, designated goods and services, applicant information, etc., and allows third parties to check the contents. The purpose of publication is to ensure theopportunity for objections.

Opposition period: Any person may file an opposition against an application published in the Trademark Gazette within 4 months from the date of publication. If no opposition is filed within this four-month opposition period, the trademark will proceed to registration. On the other hand, if an opposition is filed within the period, the registration procedure will be temporarily suspended, and priority will be given to hearing and settling the opposition first (details of the opposition procedure will be explained in the "Opposition/Cancellation System" section below).

Registration (setting registration): Trademark registration will be approved if no opposition is filed after the opposition period has passed, or if the opposition is ultimately dismissed or resolved. Once the registration fee (registration fee) has been paid, the trademark will be recorded in the register and aRegistration Certificate will be issued. In recent years, registration certificates in India can be issued and downloaded electronically and are delivered as PDFs with electronic signatures. Trademark rights become effective on the date of registration, and their duration is 10 years from the date of application. The entire examination and registration process (assuming there are no objections) takes on average about 2 to 3 years (24 to 36 months). However, due to measures to speed up examinations, the period has tended to be shortened to a certain extent in recent years, and it is possible to shorten the period even further by using the accelerated examination system described below.

4. Post-registration procedures (renewal, registration maintenance, record changes)

  • Duration and renewal: The duration of trademark rights in India is stipulated as 10 years from the filing date (for example, if the application is filed and registered on January 1, 2025, it will be valid until January 1, 2034). Trademark owners can maintain their registration by filing aRenewal application before the expiration of the term. The renewal period is extended to 10 years, and can be renewed semi-permanently every 10 years thereafter. Renewal procedures will be accepted from the year before the expiry of the validity period, and the prescribed renewal fee must be paid by the expiration date at the latest. Even if you are unable to renew by the renewal deadline, you will be given a grace period of 6 months after the expiry date to complete the renewal process by paying an additional fee. If the trademark is not renewed within this period, it will be deleted from the register and become invalid. However, in India, as a special remedy, you can apply for **Restoration** within a maximum of 6 months to 1 year after the trademark expires. Specifically, after six months have passed since cancellation, a petition for "Restoration" must be filed, and the trademark can be restored with prescribed additional fees and procedures. In this way, India allows a longer grace period and reinstatement period than Japan, and there is room for relief in the event that the renewal is inadvertently omitted (in Japan, renewals can only be renewed within six months after expiry, and rights cannot be reinstated after this period).

  • Obligation to use and cancellation of non-use: In India, aduty to continue use is imposed after trademark registration. However, it is not required to submit proof of use at the time of renewal (Actual use is not examined in the renewal procedure.) Therefore, it is technically possible to renew even if the license is not used. However, if a trademark has not been used at all within five years of registration, there is a risk that a third party will file a petition for cancellation of the trademark for non-use (cancellation registration). Under Section 47 of the Indian Trademarks Act, if a registered trademark is not used bona fide in India by the end of five years from the date of registration (actually five years + three months from the date of registration), interested parties can seek cancellation of the registration of the trademark. This calculation period is longer than Japan's "3-year non-use cancellation", so it is important for companies expanding into India to establish a track record of trademark usage as soon as possible after registration. In addition, if there is a valid reason for temporary non-use without malicious intent, the rights holder may be able to make a defense (for example, prove that the product could not be used due to import regulations, etc.). It should be noted that in India, there is a strong belief that rights are maintained through the use of trademarks, and actual track record of use is considered important when exercising rights.

  • Record of changes in registration details: If the name or address of the right holder changes after trademark registration, or if the trademark right is transferred, it is recommended that apply for a change of ownership (record change) in the registration register. The Indian Trademark Act allows for free assignment and transfer of trademarks, and registered trademarks (and pending trademarks) can be assigned. Transfers can be made for all or part of the rights (it is also possible to transfer only a portion of the designated product), and the transfer method includes the transfer of the goodwill accumulated in the trademark (goodwill), and the transfer of only the rights without goodwill (so-called naked transfer). In the event of an assignment, the transferee must apply to the Trademark Registry in a prescribed format (e.g. Form TM-P) to have the change of registered owner recorded. Failure to change the records will not affect the validity of the transfer itself, but prompt entry in the register is desirable from the perspective of the requirements to defend against third parties. India also has a licensing system in place, which allows trademark owners to permit others to use their trademarks. At that time, it is also possible to optionally register the contents of the license agreement with the Trademark Registry Office based on the Registered User system. If you are recorded as a registered user, there are legal effects such as the fact that the licensed use is considered to be the trademark owner's own use. Furthermore, special dispositions such as pledging (setting collateral) or trusting trademark rights are permitted, but in these cases, procedures for changing the record in the registry are required as necessary. In any case, it is important for to reflect the current status of rights in the registry for the purpose of exercising rights.

5. Objection/cancellation system (objection period, reasons for cancellation, review body)

  • Opposition system: As mentioned above, in India, there is an opposition period of four months from the publication of the trademark publication. An interested third party (such as a competitor) can initiate proceedings to block registration of an applied trademark by filing a prescribed Notice of Opposition within this period. When an opposition is filed, the Trademark Registry first serves a notice in writing to the applicant (the person applying for the trademark). The applicant must submit a counterstatement to the opposition within two months after receiving the notification. If you do not respond within this deadline, your application will be considered abandoned and will be dismissed.

    When the applicant submits a counterargument (written answer), a copy of it will be sent to the opponent. After that, we will enter theevidence submission procedure. First, the opponent (complaint) submits evidence (affidavits and documentary evidence) to support his or her claim, and then the applicant (respondent) submits evidence to the contrary. The opponent will also have the opportunity to submit evidencerebutting the applicant's evidence. Once all documents and evidence have been submitted, an oral hearing will be held at the Trademark Registry Office. At the hearing, both parties will prove their claims in front of a hearing officer, who will then decide whether the objection is appropriate. If the opposition is approved, the trademark application will be refused and will not be registered. If the opposition is dismissed (or withdrawn), the application will be granted registration and the registration process will be restarted. Opposition proceedings are quasi-judicial proceedings within the Trademark Registryand can take several years. In India, there are a large number of objections, and their protracted length has become a problem in recent years, and speeding up the proceedings has become an issue (some cases take 5 to 10 years to settle).

    The main reasons (grounds) for filing an opposition include general circumstances that do not meet the registration requirements, such as ``the trademark is descriptive and lacks distinctiveness,'' ``it is a common name for goods or services,'' ``the same or similar trademark has already been used or applied for by someone other than the applicant,'' ``the application was filed with fraudulent intent,'' ``the applied trademark is confusing with a well-known trademark,'' etc. Particularly in India, if there is a prior user(person who has been using the trademark from an early stage), it may be possible to block a later application by filing an opposition even if the trademark was filed earlier. Another typical example is a case in which a well-known trademark owner files an objection due to concerns about confusion or dilution of their own or other products.

    Dissatisfaction with a decision in response to a challenge used to be an appeal to the Intellectual Property Appellate Board (IPAB), but as the IPAB was abolished due to the 2021 legal reform (Court Reform Act), the High Court of each state is now responsible for hearing appeals against the decision to challenge. For example, if the trademark is in Delhi jurisdiction, an action to cancel the opposition decision will be filed in the Delhi High Court, and if it is in Mumbai jurisdiction, the Bombay High Court will be filed. If you are dissatisfied with the High Court's decision, you can appeal to a higher appellate court (a two-person panel within the High Court).

  • Post-registration cancellation/invalidation system:Even after the registration decision has been made or after the trademark registration has been finalized, there is a system in place to invalidate or cancel the registration (so-called registration dispute) if there are specific reasons. Under the Indian Trademark Act, this is called rectification, and interested parties can request a revision trial against the registered trademark. The main reasons for cancellation/invalidation are as follows.

    • Registration injustice/deficiency: When a trademark is registered even though it should not have been registered in the first place (for example, it lacks distinctiveness, is a prohibited mark, is registered in a state that infringes on someone else's previous trademark, etc., or when there is a flaw in the registration procedure.

    • Non-use: If the above-mentioned 5-year non-use applies.

    • Unauthorized acquisition: There was no bona fide intention to use the trademark at the time of application (such as a speculative trademark application), or the registration was obtained for fraudulent purposes.

    • Violation of registration conditions: If the conditions or restrictions imposed upon registration are violated (for example, the registration was limited to a specific use but the registration was not complied with).

    • Abuse of rights, etc.: Cases in which a registered trademark conflicts with other laws (e.g. copyright law or corporate name protection law), or cases in which it results in unfair competition against users of existing unregistered well-known trademarks.

    Procedures for such cancellation/invalidity are equivalent to the Japanese trial system, but in India, they are carried out in a form that is closer to a judicial procedure than an administrative trial. An interested party (cancellation requester) can firstfile a prescribed petition (Form TM-O) with the Trademark Registry ordirectly bring an actioning the competent High Court. The choice depends on the case and strategy, but after the abolition of IPAB, the High Court has become the primary venue for disputes. However, it is still possible to request cancellation to the Registration Authority (examiner), and the procedure in that case is generally the same as the opposition procedure. In other words, in response to the claimant's petition, the Registration Office will serve a copy to the trademark right holder, and within two to three months, the right holder will submit a written reply.From then on, a decision will be made after both parties submit evidence and an oral hearing is held. If you are dissatisfied with the decision of cancellation or invalidation by the Registration Authority, you can appeal (cancellation lawsuit) to the high court that has jurisdiction over the decision. On the other hand, there is also the option of filing a suit for confirmation of invalidity in the High Court from the beginning, in which case the evidence will be submitted and the trial will be held in court.process will be carried out. The high court in which a trademark can be filed is determined by law, such as the Bombay High Court if it is registered in Mumbai and the Delhi High Court if it is registered in Delhi (recently, there have been decisions regarding the interpretation of this high court's jurisdiction). In this way, it should be noted that the Indian cancellation/invalidation system is different from Japan's JPO trial, and is a court-centered procedure.

6. Rights enforcement (infringement response, civil remedies, criminal penalties, etc.)

  • Concept of Trademark Infringement: Trademark Infringement in India refers to the act of using a trademark that is the same or confusingly similar to a registered trademark to the extent that it is identical or similar to the goods or services designated by the registered trademark without the permission of the right holder. This is almost the same definition as Japan. Additionally, under Indian law, if a registered trademark is well-known, third-party use of dissimilar goods or services may be subject to an injunction as unfair competition or dilution. Furthermore, regardless of whether it is registered or not, the act of fraudulently using another person's products or business indications to cause confusion is a tort known as passing off, and civil remedies can be sought as described below.

  • CIVIL REMEDIES: Trademark owners can bring civil actions against infringers and obtain relief from the courts. In India, trademark infringement suits are primarily held in the district courts of each state, but some high courts, such as Delhi, Bombay (Mumbai), and Madras (Chennai), may also have first-instance jurisdiction themselves. In a lawsuit, you can seek an injunction (provisional injunction and permanent injunction), and request an immediate stop or seizure of the production and sale of the infringing product. Based on a petition by the plaintiff, the court can also issue an ex-officio temporary injunction (expert's interim order) without prior notice to the defendant, allowing the right holder to take prompt preservation measures. If the lawsuit is successful on the merits, in addition to a final permanent injunction, damages or an order to disclose the infringer's books and transfer profits (account of profits) may be ordered. In addition, the court will issue an order for the destruction of the trademark attached to the infringing product, its packaging, labels, etc. These remedies are broadly similar to the scope granted in Japanese civil litigation (injunctions, compensation for damages, etc.). In addition, in civil trial practice in India, settlement and mediation are often used, and there are cases in which the parties agree on the amount of damages and future terms of use, and the litigation ends through settlement. Even if it is an unregistered trademark, it is possible to request an injunction to stop unauthorized use by another person and claim compensation for damages through the above-mentioned Passing Off lawsuit. In passing-off lawsuits, the requirement for proof is that the plaintiff's trademark is well known and trusted, but India has traditionally inherited the concept of common law, and differs from Japan in that rights can be protected through use even if the trademark is unregistered.

  • Crackdown with criminal penalties: The Indian Trademark Act also has provisions regarding criminal penalties, and malicious infringement of trademark rights and the manufacture and sale of counterfeit products are treated as crimes. Specifically, the act of displaying a trademark that is the same or significantly similar to a registered trademark on goods or services without permission, or selling a product by falsely using another person's trademark falls under the crime of trademark forgery. The criminal penalties for these acts are severe, and even first-time offenders can be sentenced to prison terms ranging from six months to three years. The court will also determine the fine to be imposed in the range of 50,000 rupees or more and 200,000 rupees or less (equivalent to approximately 90,000 yen to 360,000 yen). In the case of repeat offenses, the cap will be increased further and the punishment will be even more severe. In addition, the act of falsely indicating that a trademark is a registered trademark when it is not (fraudulent display of an unregistered trademark) is also illegal, and there are penalties for this, including imprisonment for up to 3 years or a fine (or both). In actual enforcement, the rights holder will file a complaint with the police authorities and have them prosecuted. Trademark owners can obtain a search warrant and, with the cooperation of the police, conduct raids** on warehouses and stores to seize counterfeit products and prevent them from being sold. This is similar to Japan's criminal procedure (arrest by the police for violation of trademark law). In India, there are many cases in which criminal measures are used to combat particularly malicious counterfeiting, and criminal prosecution serves as a deterrent.

  • Customs border measures: Additionally, India also has border measures for intellectual property rights. By pre-registering their registered trademark and information on infringing goods with customs authorities, trademark owners can stop counterfeit goods at the import stage. Once registered with customs, the customs office that discovers suspicious imported cargo will hold the cargo ex officio and notify the right holder. However, since these customs measures are not included in the user requirements, detailed explanations are omitted.

7. Comparison with the Japanese trademark system (differences, practical points)

While India's trademark system has many things in common with Japan, there are important differences in terms of legal system and operation, as listed below. We will also organize Practical points when Japanese companies file trademark applications and exercise rights in India.

  • First-to-file system vs. first-to-use system: Japan has adopted a strict first-to-file system (first-come, first-served registration system), and as a general rule, the first person to apply receives registration. On the other hand,India has a unique system in which the first-to-file system and the first-to-use system coexist. In other words, although legally priority is given to those who apply first, protection is clearly given to those who have started using the same or similar trademarks (prior users), and in some cases, there is a possibility that a prior user may be able to obtain registration even if they apply later. For example, if a trademark has been used in the Indian market before another company, even if the other party filed an application first, it is possible to invalidate the other party's registration by claiming prior use in an opposition or cancellation trial. Additionally, Section 34 of the Indian Trademarks Act stipulates that the continued use of a registered trademark by a person who has started using it in good faith prior to its registration will not be an infringement (so-called prior user right). In Japan, there is a provision for "prior user rights" in the Trademark Law, but this gives the prior user before registration the right to continue using the trademark within its previous scope (Article 32 of the Trademark Law), and does not allow the prior user to invalidate the other party's registration itself or obtain registration for oneself. Therefore, it should be noted thatin India, unregistered rights through use are more important than in Japan. When a Japanese company applies for a trademark in India, it mustIt is important to investigate in advance whether the trademark (or similar trademark) is already in use, and if there is a previous user, it is important not to start developing the brand in the local area, or to consider countermeasures such as reaching an agreement with the other party (obtaining a written consent) or starting to use the trademark early in the local area. On the other hand, if your company has a trademark that you have already used in India, it is important to file the application as early as possible to avoid being filed by a competitor first, and even if your company files an application first, it is important to be prepared to protect your rights by filing an opposition by documenting your company's history of use (especially sales and invoice documents).

  • Whether there is an oath of use at the time of application: In Japan, when filing a trademark application, there is no obligation to declare whether the trademark has already been used, and you can apply if you intend to use it in the future (no proof of use is required). On the other hand, in India, it is necessary to declare whether it is "in use" or "not in use (planned to be used)" at the time of application. If it is already in use, you must specifically state the date of earliest use and submit evidence of use. Due to this difference, it is necessary to choose a strategy according to the actual situation when filing an application in India. For example, if there are competing trademarks, it is more advantageous in examination and opposition to select a ``use-based application (with actual use)'' and attach sufficient evidence. Once Japanese companies start using trademarks in India, they must quickly assess their track record and, if possible, file applications after they start using their trademarks (or wait until they start using them to prepare for objections). On the other hand, even if you are filing an application without using the patent, it is advisable to thoroughly investigate whether a competitor has a prior user.

  • Timing of publication/opposition: India's opposition system is a preliminary opposition system in which oppositions are filed before registration (after publication of the application). If there are no objections within four months of the public announcement, the registration will be granted, so at first glance it may seem that the process of acquiring rights is smooth, but if an objection is raised, the registration will be suspended until the process is completed, which may take a long time. On the other hand, Japan has adopted a post-objection system in which public notice and opposition are filed after trademark registration (within two months of publication of the registration gazette). In Japan, once the examination is passed, a registration certificate is issued and the rights are granted, but if an objection is subsequently made, the rights are revoked (transitioned to the current system with the 2015 legal amendment). Because of this difference,in India, objection risks need to be addressed at the pre-registration stage. If there is a prior trademark that is likely to cause problems locally, it is necessary to have a strategy for dealing with objections even before the trademark is granted, such as obtaining a consent form from the filing stage or negotiating a settlement if an objection is received after the application is published. On the other hand, in Japan there is a period for filing an opposition after registration, so uncertainty remains for two months even after obtaining rights, but compared to India, the period for opposition is shorter and the number of objections tends to be relatively small. In India, it has been pointed out that the reason behind the preference for filing objections is the corporate mindset of ``not trusting much in the examinations of the authorities, and protecting their own rights by themselves.'' Japanese companies also need to keep in mind the possibility of opposition from competitors when they publish their own trademark applications, and also need to be proactive in considering filing an opposition against other companies' announcements in order to protect their rights.

  • Jurisdiction of invalidation/cancellation trials: In Japan, invalidation trials and cancellation trials after trademark registration are under the jurisdiction of the Trial and Appeal Board of the Japan Patent Office, and if you are dissatisfied with the trial decision, you can appeal to the Intellectual Property High Court.The system is centered on administrative trials. On the other hand, in India, as mentioned above, as a general rule, disputes over cancellation or invalidity after registration are heard by a court (high court) rather than the Intellectual Property Office. India used to have a specialized adjudication body called IPAB, but it has been abolished and now local high courts directly decide on the cancellation and invalidity of trademarks. Therefore, in order to invalidate another company's trademark in India, there are many cases where a lawsuit is filed in court from the beginning, which tends to be more complicated and expensive than in Japan. In addition, while anyone can request an invalidation trial in Japan, there is a requirement that a request for revocation/rectification in India can only be filed by an "interested party." Therefore, in practice, disputes are often limited to disputes between companies that actually compete in the market, and it is unlikely that a third party unrelated to the rights will attempt to invalidate the rights in a harassing manner (this is also a difference with Japan). As a Japanese company, you need to be careful not to let your trademark go unused, and in the unlikely event that it is illegally registered by another company, you need to prepare for a dispute at the high court level and prepare appropriate evidence and legal arguments.

  • Differences in non-use cancellation period: As mentioned above, the non-use period before a trademark non-use cancellation is requested is 3 years in Japan and 5 years (+3 months) in India. For Japanese companies, in India they can maintain their rights for a relatively long time after registration even if they are unused, but on the other hand, if they want to eliminate a competitor's dormant trademark, they have to wait more than five years, which can make it difficult to quickly sort out the trademark. As a strategy, even if you register a large number of trademarks that are not intended to be used locally, they can be canceled after five years, so planning is required in terms of operation, such as not having too many unnecessary rights, and conversely, if other companies are holding on to the rights, consider a long-term strategy.

  • Place for enforcing rights: In Japan, trademark infringement lawsuits are handled by each district court (centralized in Tokyo and Osaka), and heard by divisions specializing in intellectual property (including the Intellectual Property High Court). India does not have a court specializing in intellectual property, but specialized IP divisions are being established in some courts, such as the Delhi High Court. In addition, in recent years, India has introduced a system that requires mediation before filing infringement lawsuits, as well as online hearing procedures, and efforts have been made to use IT and speed up procedures in recent years. When a Japanese company pursues an infringement lawsuit in India, it is essential to collaborate with a local lawyer who is familiar with the differences in courts and procedures. In particular, trials in India often take a long time, so flexible strategies such as obtaining preliminary injunctions early and negotiating settlements are important.

  • Well-known trademark system: In Japan, there is no direct legal definition for a well-known trademark, and whether it is well-known or well-known is judged on a case-by-case basis, but in India, a well-known trademark registration system has been in place since 2017. Trademark owners can apply to the Trademark Office to have their trademark officially recognized and listed as a Well-Known Trademark. Once it is registered as a well-known trademark, it is given strong protection that allows others to reject applications for similar trademarks, even for dissimilar goods and services (*However, the right holder must file an objection in order to be refused). Japan does not have such a public famous trademark list system (although trademarks may be recognized as famous during trademark examinations and trials, there is no pre-registration system). Therefore, it is worth considering registering a well-known trademark in India for companies with internationally renowned brands. On the other hand, if a Japanese company applies for a similar trademark without knowing that it is another person's well-known trademark, it should be noted that it may be subject to rejection or opposition before it is registered in India.

  • Detailed differences in systems: In addition, India has several unique systems derived from old Anglo-American law. Examples include the consent system (a system that allows similar trademarks to be registered with the consent of the prior trademark right holder), the disclaim system (specifying that rights will not be claimed for the non-distinctive parts of the trademark), and the faithful simultaneous use claim (allowing coexistence of multiple similar trademarks that have been used simultaneously in good faith). In recent years, submission of consent forms regarding the existence of similar trademarks has become partially accepted in Japan, but it is more commonly used in India. Furthermore, the concept of associated trademark (a system that associates registered trademarks and restricts their transfer) remains in Indian law, and there are remnants of the once-existing defensive trademark (system that defensively protected well-known trademarks by making them similar to others), which has been abolished. These systems are special and require an understanding of the detailed rules, so it is best to deal with them while seeking advice from a local agent.

As mentioned above, although the basic framework of the Indian trademark system is the same as that of Japan, there are various practical points to keep in mind, such as the large weight of use and differences in review bodies and procedures. When applying for and acquiring trademark rights in India, the key to success is to develop a strategy that is consistent with the local legal system and prepare for aspects that differ from the Japanese sense (claims of prior use, handling of objections, risk of cancellation for non-use, etc.). It is also important to work with a reliable local trademark agent to gather appropriate information and take actions to protect rights. Although there are differences in national circumstances and commercial practices, in recent years the Indian Intellectual Property Office has been making improvements such as digitization and shortening the examination period. By correctly understanding these systems and making effective use of them, Japanese companies will be able to smoothly advance their brand strategies in the Indian market.

Sources:

  • Intellectual Property Board of India (CGPDTM) official website etc.

  • Indian Trademark Act (1999 Act), Trademark Rules (revised in 2017), etc.

  • World Intellectual Property Organization (WIPO)/JETRO materials, etc.

  • Explanation of local law firms (Mirandah Asia, HARAKENZO, etc.), etc.